Davis Brown Intellectual Property Law Blog

Constitutional Law vs. Trademark Law: Which Law Wins in the Battle of "Disparaging Trademarks" - April 28, 2015

The topic of “disparaging trademarks” has been a fairly common topic in the trademark industry, especially when you consider how little this issue comes up in the prosecution and litigation of trademarks.

Trademark law aims to protect both a business owner and the consuming public by ensuring fair competition in the marketplace. How is this goal achieved by a governmental administrative office? The United States Patent and Trademark Office, and specifically the Trademark Trial and Appeal Board (“USPTO”; “TTAB”) can be considered the gatekeepers when it comes to federal protection for trademarks.

The TTAB has the power to decide if an application for a trademark is eligible to become a federally registered mark. There are several factors that go into this determination, including determining if a newly filed mark is “too close” to a previously filed application or registration, and, in rare cases, whether the applied-for mark is obscene or disparaging.

Two-Part Disparaging Test

Like with most areas of law, there is no clear-cut way to determine whether a mark is “disparaging” and should be denied a federal registration. However, the USPTO conducts a two-part test to help determine if a mark is “disparaging” to a group of people:

Would the mark be understood, in its context, as referring to an identifiable group of people?

May that reference be perceived as disparaging to a substantial composite of that group?

The evidence accepted by the USPTO to determine if a mark involved an identifiable group of people includes:

The dictionary definition of the term;

the relationship of the term and other elements of the mark;

the type of product upon which the mark appears; and

how the mark will appear in the marketplace.

If you are asking yourself “how can these guidelines be followed in a consistent and reliable matter?” you are not alone. Because the USPTO employs hundreds of examining attorneys to review individual applications, it’s no surprise the results of this test are not consistent.

For example, the case of the mark “Dykes on Bikes,” which is a registered trademark, U.S. Reg. No. 3,323,803. This long-standing battle ultimately led to the registration of the mark, despite outcry from various groups regarding the “scandalous and immoral” nature of the sought-after mark.

Later this week

On Thursday, we'll cover part II of the disparaging trademarks battle: constitutional law.

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